Bulletin
IN THIS ISSUE
AUG 1, 2001
2
THE VOICE OF THE INTERNATIONAL TRADEMARK ASSOCIATION VOL. 56, NO. 14
Milestone for U.S. Electronic
Applications
INTA Bulletin Receives
Award for Excellence
3
INTA U.S. R EPORT
New Signature Options
Open Up at the USPTO
Ceremony commemorates 100,000 electronic applications at the USPTO.
BY PATRICIA WILCZYNSKI,
SCULLY, SCOTT, MURPHY &
PRESSER, Garden City, New
York, USA
ON JUNE 25, 2001 a special ceremony was held at the United
States Patent and Trademark
Office (USPTO) Museum in
Crystal City, Arlington, Virginia,
to commemorate the filing of the
100,000th electronic application,
for the mark GE, Serial No.,
78/067,128, filed by General
Electric Company on June 4,
2001.
In her opening remarks, Anne
Chasser, Commissioner of
Trademarks, observed that while
the ceremony recognized a specific
snapshot in time of electronic filing, the “100,000th filing is simply
part of our much larger
e-government picture.”
E DITOR’S N OTES
4
LAW & PRACTICE
IRAQ
Service Marks
Registrable
KUWAIT
Examination
of Trademark Applications
SINGAPORE
Tightening Intellectual
Property Protection and
Enforcement Laws
(from left to right) Nicholas Godici, Kathryn Barrett Park, Ron Myrick
and Anne Chasser
Nicholas Godici, the USPTO’s
Acting Under Secretary of
Commerce for Intellectual
Property and Acting Director,
added: “Currently about 25 percent of our overall trademark fillings are done through TEAS. By
2002, we expect that number to
grow to 50 percent and by 2003,
we are targeting a 80 percent filing
level for trademarks.”
Bob Anderson, Deputy
Assistant Commissioner for
Trademarks, was recognized as the
“visionary” who made e-commerce
within the Trademark Operation a
reality, together with former
Commissioners, including Gerry
Mossinghoff, who was credited
with the first vision of a paperless
office in the early 1980’s.
CONTINUED ON PAGE
TAIWAN
Change in Office Practice
URUGUAY
Registration of Sound
Marks
6
IN
THE
N EWS
A Whole Lotta Shakin’
Going On
LARA CROFT Late
for the Game
2
Certification Mark
Conflicts with Trademark
Hormel Swallows SPAM
Differentiating between a product name and a well-used term.
BY TIMOTHY J. LOCKHART & TARAH S. GRANT
HOGAN & HARTSON L.L.P., McLean, Virginia, U.S.A.
IN A POLICY STATEMENT posted on its web site at
www.spam.com, Hormel Foods Corp. announced
that it will no longer object to use of the term “spam”
to describe unsolicited commercial e-mail, provided
that its SPAM brand luncheon meat is not associated
with the alternative meaning and the word is written
in all lower-case letters.
For those writing specifically about Hormel Food
Corp.’s famous pink product, the policy provides a
couple of simple guidelines: “Always put the trademark SPAM in all capital letters. Follow SPAM with
‘Luncheon Meat’ or other descriptor. Remember, a
trademark is a formal adjective and, as such, should
always be followed by a noun.”
Offering examples of other trademarks used in vernacular speech, Hormel claims that the slang term
does not tarnish its trademark for the canned meat.
“In a Federal District Court case involving the famous
trademark STAR WARS owned by LucasFilms, the
Court ruled that the slang term used to refer to the
Strategic Defense Initiative did not weaken the trade mark and the Court refused to stop its use as a slang
term.”
Says Hormel in its policy statement, “Other exam ples of famous trademarks having a different slang
meaning, include MICKEY MOUSE to describe
CONTINUED ON PAGE
4
7
M EMBER S POTLIGHT
Susan Santaniello
ON
8
THE
M OVE
R EADING R EVIEW
2001 Trademark Law
Handbook
EDITOR’S Notes
Milestone for U.S. Electronic
Applications
CONTINUED FROM PAGE
INTA Bulletin
Receives Award
for Excellence
To Our Readers:
I AM PLEASED to announce that the
INTA Bulletin has won the Award of
Excellence in the 13th Annual APEX
Competition in the category of “Most
Improved Newsletters.”
This U.S. competition drew some
5,100 entries. According to the APEX
2001 judges, “the awards were based
on excellence in graphic design,
editorial content and the success of the
entry in achieving overall
communications effectiveness and
excellence.”
Credit for this achievement goes to
Managing Editor Naeran Rubio, who
oversaw the redesign of the INTA
Bulletin’s layout and overall appearance, as well as Executive Editors Fred
Carl, Thomas Drescher, Olga
Nedeltscheff, and Trevor Stevens,
and all members of the INTA Bulletin
Committee.
This is a great honor, and we look
forward to continuing to enhance the
INTA Bulletin in the future.
Sincerely,
John Crittenden
Editor-in-Chief
2
1
The ceremony also recognized the important
contributions of individuals who brought ideas
from the concept stage to the viable operating
system. Among these individuals, Janice
O’Lear, Chris Doninger, Glen Brown and
Steve Hu were singled out as the early
designers who began to work on a project
designed to improve the existing paper forms
but ended up replacing the paper forms with
the revolutionary TEAS.
A Finalist Award was announced for the
RIT/USA TODAY Quality Cup Competition
and TEAS Project Manager, Craig Morris, presented his team, consisting of Steve Hu, Chris
Doninger, Steve Meyer, Hosanna Kuah, Karen
Strohecker and Peggy Horng, with individual
award certificates.
The USPTO adds this award to the SemiFinalist award in the 2000 Innovations in
American Government Awards Competition
sponsored by the Ford Foundation and the
JFK School of Government at Harvard and the
GE, as well as Mattel, Viacom
International and Procter &
Gamble were recognized as the
largest TEAS users.
2000 Government Technology Leadership
Award, sponsored by Government Executive
Magazine.
GE, as well as Mattel, Viacom International
and Procter & Gamble were recognized as the
largest TEAS users. Both Ron Myrick, Chief
Intellectual Property Counsel for GE and
Kathryn Barrett Park, Chief Trademark
Counsel for GE, were present at the ceremony
to receive a commemorative plaque.
When accepting the plaque Ms. Park
observed that on the morning of June 4, GE
filed a total of 53 applications within a single
hour. She indicated that she was delighted to
learn that one of them was the milestone
100,000th electronic application.
“The USPTO’s electronic filing system
meshes perfectly with our paperless office initiative,” said Ms. Park, “The significant savings
in both time and money over traditional paper
transactions made the decision to switch to
e-filing a no-brainer.”
INTA President’s Award
It’s still not too late to send in your nominations for this year’s
INTA President’s Award.
The Award was designed to acknowledge the profound appreciation of
the global trademark community to individuals who had a lasting impact
on INTA and its mission. All INTA Members are encouraged to submit
nominations for the Award.
Criteria for nomination is as follows:
• Consistently outstanding service to the Association through work on
committees, task forces and/or the Board of Directors;
• Innovative approaches to the fulfillment of INTA’s mission that have had
an enduring impact on the Association;
• Role model and leader in the practice of trademark law.
Nomination forms are included with this issue of the INTA Bulletin.
Fax all nominations by September 1, 2001, to:
Attn: The Executive Director
Fax: +1 (212) 768-7796
INTA Bulletin • August 1, 2001, Vol. 56, No. 14
INTA
U.S. Report
New Signature
Options Open Up
USPTO provides enhanced signature options
for trademark practitioners.
BY PATRICIA WILCZYNSKI
SCULLY, SCOTT, MURPHY & PRESSER
Garden City, New York, USA
THE U.S. PATENT and Trademark
Office’s (USPTO) Trademark
Operation continued to enhance
its electronic application system,
TEAS, by launching on June 21,
2001 two signature enhancement
options.
The new signature options are
accessed by selecting the text form
icon from the Validation Screen.
The first option requires an e-signature. The text form is e-mailed
to the proper signatory as a
“hyperlink” and then signed by
the signatory using an electronic
signature. No downloading is necessary and no data other than the
signature and date can be manipulated. After signing, the signed
version is automatically returned
to the original preparer. This
application, however, must be
signed, returned and filed within
72 hours of validation.
The second option requires a
conventional signature. A paper
text form is printed out, forwarded to the proper signatory, signed
using a conventional pen and ink
signature and returned to the “preparer.” The signature page is
scanned and attached to the original electronic application as a GIF
or JPG file. The application is
then re-validated before filing electronically.
Earlier this year the Trademark
Operation placed on the USPTO
web site a new form called the
To meet customer
needs for multiple
filings, the USPTO
continues to work on
developing means to
import relevant data
into the electronic
forms quickly and
easily.
“Downloadable Blank Initial
Application form” that permits
application “preparers” to create
form templates for the same client.
There are, however, certain limitations, namely, the inability to validate the completed application
and the inability to alter the basic
structure of the template (i.e.,
change an ITU template to a usebased application or change a single class application to a multiclass application).
To meet customer needs for
multiple filings, the USPTO
continues to work on developing
means to import relevant data into
the electronic forms quickly and
easily.
Future enhancements currently
under development include a
series of new forms involving collective membership marks, collective trademarks, service marks,
certification marks, requests to
divide, responses to Office Actions
and changes of correspondence
address and upgraded payment
options including electronic funds
transfer, e-check and electronic
debiting of debit accounts. These
are scheduled to launch later this
year.
Participants of the Basics of Trademark Law Forum have the
option to stay at the Grand Hyatt Washington.
Forum Focus
Don’t miss these upcoming
INTA programs:
Basics of Trademark
Law Forum
Co-Sponsored by the
National Bar Association
September 10–11, 2001
Grand Hyatt Washington
Washington, DC, U.S.A.
Experienced practitioners provide a
comprehensive background in the
fundamentals of trademark law.
TTAB Practice for Advanced
Practitioners
September 13, 2001
Loews L’Enfant Plaza Hotel
Washington, D.C., U.S.A.
A faculty of successful TTAB practitioners
share their collective wisdom, practice tips
and litigation tactics to help you win your
next TTAB case.
For complete program details and
registration information, visit the INTA
web site at www.inta.org.
August 1, 2001, Vol. 56, No. 14 • INTA Bulletin
3
Hormel Swallows SPAM
CONTINUED FROM PAGE
1
something unsophisticated; TEFLON, used
to describe President Reagan; and
CADILLAC, used to denote something as
being [of] high quality.”
The policy statement was posted over a
year ago but went unpublicized until last
month when www.wired.com reported on it
in connection with SpamCon, an antijunkmail conference. According to Julie
Craven, Hormel’s director of public relations,
the term’s popularity forced the company to
refocus its trademark protection efforts. “It
certainly was at a point where it was becoming so much a part of popular culture,” she
said.
In the past Hormel has vigorously defended its SPAM mark by trying to stop alternative uses of the term. For instance, in 1995
the company sued Jim Henson Productions
over a Muppet named “Spa’am,” arguing that
the wild-boar character would “inspire nega tive and unsavory associations” with SPAM
luncheon meat. However, the court held that
Henson’s use of Spa’am neither infringed
upon nor diluted Hormel’s SPAM mark.
“Countless jokes have played off the public’s unfounded suspicion that SPAM is a
product of less-than-savory ingredients,” the
judge wrote, ruling that the Muppet character was a harmless and lighthearted parody.
According to Merriam-Webster’s Collegiate Dictionary, Monty
Python’s Flying Circus is responsible for the popular culture
usurpation of the SPAM mark.
In 1997 Hormel tried to shut down the
so-called “king of spammers,” Sanford
Wallace, objecting to his use of the word
“spam” and his registration of
“spamford.com” as a domain name for his
ISP service. Wallace’s attorney responded to
Hormel’s cease-and-desist letter by telling the
company, in effect, to lighten up. “As you
must know, the term ‘spam’ is ubiquitous in
cyberspace . . . it’s far too late to change the
vocabulary of 25 million Internet users,” he
wrote.
According to Merriam-Webster’s Collegiate
Dictionary, Monty Python’s Flying Circus is
responsible for the popular culture usurpation
of the SPAM mark. In one of the British
comedy troupe’s famous skits a group of
Vikings chanted a chorus of “SPAM, SPAM,
SPAM” at ever-increasing volume in attempt
to drown out other dialogue. “The Monty
Python skit made a new generation aware of
SPAM, and they thought it was funny,” said
Carolyn Wyman, author of Spam: A
Biography.
The skit came to the minds of early
Internet users who quickly became frustrated
with unsolicited commercial e-mail messages
that were essentially drowning out other
electronic conversations.
“We’ve felt bad for Hormel Foods that
their somewhat strange but legitimate product has been used to describe a thoroughly
hated practice,” said John Mozena, a board
member of the Coalition Against Unsolicited
Commercial E-mail. “I’d rather get a can of
SPAM than a megabyte of spam.”
Spam, the e-mail kind, will be in the
legislative frying pan this year as Congress
considers a bill that would allow people to
sue spammers. At least 18 states have enacted
anti-spam laws, and more may follow.
Sources: “It’s Official: Oxford Declares ‘Spam’ is More
Than Just Meat,” msnbc.com, August 20, 1998; “A
Brief History of SPAM and Spam,” Wired News, May
26, 2001; “Hormel Drops Slang Fight,” abcnews.com,
May 30, 2001; “Hormel is Resigned to Use of ‘Spam’
in Net Slang,” SiliconValley.com, May 30, 2001;
“Spam Makers Settle Spat Over Double Meaning,”
dailynews.yahoo.com, May 30, 2001.
Where it all began:
A sample of
Hormel’s SPAM
luncheon meat.
Spamming Time–––––a brand evolution
1937:
Hormel debuts its first can
of Spiced Ham. A friend of
the Hormel family merges
the two words and wins
$100 in a contest.
1941-1945: American GIs
fighting to liberate Europe
encounter SPAM in their
daily rations, and
Russians, who received
the canned meat as a part
of Lend-Lease throughout
WWII, nickname the product “Roosevelt Sausage.”
4
1955-57:
SPAM’s popularity spreads
as Hormel establishes
manufacturing agreements
with companies in Ireland,
Venezuela, England, and
Canada. Later, Israel gets a
kosher SPAM.
1986:
Hormel sells its
four billionth can of
SPAM.
1970:
Monty Python’s Flying
Circus performs a comedy
sketch in which the Green
Midget Cafe serves up
plenty of SPAM.
1999:
Y2K paranoia drives a
boom in SPAM sales,
helping Hormel make
record earnings in fiscal
2000.
INTA Bulletin • August 1, 2001, Vol. 56, No. 14
1998:
The SPAM can gets a new
look
2000: Hormel and the
Minnesota State Lottery
jointly sponsor a SPAM
lottery game; it turns out
to be one of the state’s
biggest games ever.
2001: A 16,550-square-foot
SPAM museum is set to
open in Austin, Minnesota,
this fall. Visitors will be
able to learn about SPAM’s
history, buy SPAM
memorabilia, and taste
SPAM specialties.
Law + Practice
URUGUAY
soon as possible.
Source: Hisham Zahr, Saba & Co,
Beirut, Lebanon; Verifier: Advocates AlBaghli & Al-Molah, Al-Baghli & Al-Molah
Registration
of Sound Marks
Law Office, Kuwait.
IRAQ
Service Marks
Registrable
On April 29, 2001, the Iraqi
Trademark Office issued a directive announcing that it is now
possible to register service marks
in Iraq in accordance with the
International Classification but
with local subgrouping.
The directive, which became
effective on the above date, outlines the filing of trademark
applications in service classes 35
to 42. Until this announcement,
Iraqi trademark law provided
protection only for goods.
Source: Hisham Zahr, Saba & Co.,
Beirut, Lebanon; Verifier: Advocate E.
H. Bakr, Ekram Al-Haq Baker Law
Office, Iraq.
KUWAIT
Examination of
Trademark
Applications
To minimize the backlog of
trademark applications filed at
the Trademark Office in Kuwait,
the Minister of Industry and
Trade issued a decree in March
2001 instructing the Office to
expedite the examination of
approximately 9,000 applications filed in recent years.
As a result of the accelerated
examination procedures, trademark agents in Kuwait are
receiving about 400 office
actions per week, with many
more expected. Moreover, agents
are requested to respond to the
Registrar’s conditions, and pay
the publication and registration
fees of their respective cases as
SINGAPORE
Tightening Intellectual
Property Protection
and Enforcement Laws
Singapore has been asked to
tighten intellectual property protection and enforcement laws by
American businesses and interest
groups. The United States and
Singapore are negotiating a
bilateral free trade agreement
(FTA) and the interest groups in
the United States have submitted a long list of comments
including the following:
• Intellectual property rights
holders have been forced to
prosecute criminal cases themselves;
• Singapore’s Customs
Department requires trademark and copyright owners to
provide “unreasonable” information for border enforcement, which include details of
the arrival of the infringing
goods;
• Singapore’s intellectual property system falls short in certain
areas, such as the protection of
test data;
• No relief is offered to patent
owners who have the effective
term of their patents reduced
by regulatory or administration delays;
• Singapore’s patent laws make
enforcement difficult by overly
restrictive notice requirements.
Singapore has responded to
the above claims. Negotiations
between the parties are
continuing.
Source: Dedar Singh Gill, Drew &
Napier LLC; Verifier: Yew Woon Chooi,
Helen Yeo & Partners.
TAIWAN
Change in Office
Practice
The Intellectual Property Office
of Taiwan (IPO) announced on
April 16, 2001 a change in practice regarding goods or services
incorrectly classified in trademark applications.
In the cases where the examiners decide that certain items
should be deleted from a pending trademark application, due
to incorrect classification, a fresh
application to cover the deleted
items is required because multiple-class applications are not
available in Taiwan. Under the
old procedure, the fresh application would be given a new filing
date.
Under the changed Office
practice, the filing date of the
pending application will now be
maintained for the fresh trademark application. The priority
claim, if any, for the pending
application may also be retained
for the fresh application, which
may be filed after the six-month
statutory period for claiming
priority. This practice applies
equally to goods and services.
Registration of sound marks was
implemented in Uruguay on
May 8, 2001. The notice was
published in the Official Gazette
Decree No. 146/2001.
Sound marks are, by definition, signs that are perceptible
through the ear. They must also
be distinguishable by a product
or service in accordance with the
provisions of the Uruguayan
Trademark Act, No. 17.011.
In order to register a sound
mark, an applicant must file the
graphic representation of the
sound through a special code.
Also required are a brief description that allow identification of
the sound in question, and a
material example of the sound
that would be able to be reproduced. The Trademark Office
may also request, at the expense
of the applicant, an expert to
determine any confusing
similarity with prior sound
marks.
Pending sound mark applications have to be adapted in
compliance with the Decree.
The deadline fixed for this
purpose is July 17, 2001.
Source: Oscar Bacot, Bacot & Bacot,
Montevideo, Uruguay; Verifier: Dr.
Rafael Zerbino Stajano, Bado, Kuster,
Zerbino & Rachetti, Montevideo,
Uruguay.
Source: Kwan-Tao Li, Lee and Li,
Taipei, Taiwan; Verifier: Chan Hui-Ming,
The Intellectual Property Office, Taipei,
Taiwan.
August 1, 2001, Vol. 56, No. 14 • INTA Bulletin
5
In THE News
Source: The Wall Street Journal, June
15, 2001; Editor: Mary De Longis,
Guinness UDV North America, Inc.,
Stamford, Connecticut.
A Whole Lotta Shakin’
Going On
In the News is a compilation of
articles about trademark law
and business, abstracted from
news publications from around
the world. This issue, topics in
the news are:
SHAKIN’
LUCOZADE
LARAZADE
PARENT’S CHOICE
In a lawsuit that tests the boundaries of protection for an advertising theme or concept, Game
Over, of Springfield Gardens,
New York, U.S.A., filed suit
against sporting-goods giant Nike
and its advertising agency, charging that Nike’s popular television
commercial featuring various
NBA basketball stars violates
Game Over’s trademark rights in
its “Shakin’” basketball competition.
Game Over describes “Shakin’”
as a “basketball-handling competition that combines basketball,
music and break dancing” to promote its athletic sportswear. The
company claims to have sponsored “Shakin’” competitions
throughout the United States.
Game Over alleged that Nike’s
advertising agency saw one or
more of these “Shakin’” shows
and used the concept in a widely
viewed commercial called
“Freestyle.” The Nike television
advertisement has famous
National Basketball Association
stars such as Jason Williams,
Rasheed Wallace, Vince Carter,
Darius Miles and Lamar Odom
dancing while dribbling basketballs.
In a statement issued by the
company, Nike emphatically
denied Game Over’s claims. A
Nike spokesperson said “On the
chance that the case is not thrown
out by a judge before reaching
trial, we look forward to defending our position in court.”
Presumably, the court in question is one of law, not basketball.
Source, The Wall Street Journal “
Sportswear Company Claims Foul in
Nike’s Use of Basketball Stars,” June
20, 2001; Editor: Bruce Ewing, Dorsey
and Whitney, New York City, U.S.A.
6
INTA Bulletin • August 1, 2001, Vol. 56, No. 14
Certification Mark
Conflicts with
Trademark
LARA CROFT Late for
the Game
Although Paramount Pictures
has released its new movie Lara
Croft: Tomb Raider starring
Angelina Jolie as the eponymous
adventuress and is promoting the
film in Taco Bell restaurants, on
Pepsi Cola products and during
the National Basketball
Association finals, fans will not
find a new game to coincide with
the movie’s introduction. Eidos
Plc, the London-based game
maker and creator of the Lara
character, reports that delays have
prevented it from developing
another game to tie into the current movie.
The company is, however,
exploring alternative marketing
opportunities to generate revenue.
For starters, it has negotiated an
agreement with GlaxoSmithKline
plc, to rename its
LUCOZADE energy drink
LARAZADE in the U.K. and
U.S. markets this summer.
According to Daniel Bevers,
Webmaster of the fan site Tomb
Raider News Channel, Tomb
Raider fans can’t wait for the
release of the next game, which is
expected to launch late in 2002.
On June 15, 2001 Parents’
Choice Foundation, a
Massachusetts charitable trust,
filed suit against Wal-Mart Stores,
Inc. for use of the mark
PARENT’S CHOICE on infant
formulas and other products,
in the U.S. District Court in
Maryland.
According to its web site, the
foundation, founded in 1978, is
“the nation’s oldest not-for profit
evaluator of children’s books,
videos, toys, audio[s], computer
software, television and
magazines.”
The foundation issues “Parents’
Choice” awards for products
fitting its child development
standards. The Foundation owns
a registration for the PARENT’S
CHOICE mark and one for the
certification mark THE
PARENTS’ CHOICE AWARD.
The suit claims intentional
similarity to the appearance of its
awards and to the mark
PARENTS’ CHOICE.
Wal-Mart Stores, Inc. owns a
U.S. registration for “PARENT’S
CHOICE” in international class
5 for “infant formula, and
applications in classes 5, 8, 10,
18, 21, 25, 26 and 28 for a variety of infant goods. The Parents
Choice registrations and applications do not cover the same goods
and services as those belonging to
Parents’ Choice Foundation.
Source: “Charitable Trust Sues Wal-Mart
over Trademark Infringement”,
Associated Press June 20, 2001;
Editor: Noelani Nitz, Hiroe and
Associates, Gifu, Japan.
MEMBER
Spotlight
BY ALISA LEWIS, White & Case, Hong Kong
SUSAN SANTANIELLO
GOTTLIEB RACKMAN &
REISMAN, P.C.
New York City, USA
SUSAN SANTANIELLO is an associate at
Gottlieb Rackman & Reisman, P.C., located on New York City’s famed Madison
Avenue. Susan was nominated for Member
Spotlight by Tricia Simpson, INTA’s
Meetings & Roundtables Planner.
Ms. Simpson, along with Ann Eng,
INTA’s Programs Development Manager,
lauded Susan: “She has impressed us as
being a very dedicated, knowledgeable and
creative professional who goes the extra
mile on any task she is involved in. She
exudes enthusiasm and is a team motivator. We have worked with her on project
teams to develop forums, and she has
always demonstrated leadership and vision.
She can always be relied on to do a
first-rate job.”
and Paralegal Forum 2001, to be held this
October in Chicago.
I have worked in the trademark field for:
I currently serve on: TMA Forums 2001
10 years, six as a trademark paralegal
and 2002 committees, and [the]
Trademark Management Committee.
I began working in the trademark field
when: I started out working for a copyright
Member Spotlight
features the exceptional
contributions of INTA
committee members.
Committee Chairs, Vice
Chairs and
Subcommittee Chairs
are invited to suggest
names for consideration
in Member Spotlight.
To suggest a name,
please contact INTA
Bulletin Managing Editor
Naeran Rubio by e-mail
at [email protected] or
phone:
+1(212) 642-1712.
and trademark litigation attorney, and
worked on several infringement cases. I
found the whole process of registering
trademarks and protecting trademark
rights fascinating. I wanted to learn more.
My firm allowed me to transfer to trademark prosecution and administration and
I’ve been enjoying my work ever since.
My first position in the trademark field
was: Trademark Administrator at Cowan,
Liebowitz & Latman, P.C. in New York.
They trained me and I learned a great deal
there. My fellow trademark administrators
would tease me because I was so enthusiastic, “I got a registration in France!”
I’ve been involved with INTA activities
since: 1996. My firm sent me to my first
Trademark Administrators and Paralegal
Forum in Arlington, Virginia then. I loved
it! I learned a great deal. I met Colleen
Sarenpa, who spoke at the forum. I was so
inspired by her, I decided to apply to join
an INTA committee. To this day, I still
thank Colleen, with whom I’m [now]
working on the Trademark Administrators
I have particularly enjoyed working on:
both of the committees I have been
involved with. The first is Trademark
Management, where I have worked on the
paralegals and non-attorneys surveys
(salary, perks, and needs). I find this work
very rewarding, as we provide an important service to the non-attorney members
of INTA. I’ve also been involved for the
past two years on the committees for the
TMA (Trademark Administrators) Forums
(2000 and 2001) and will be co-chairing
the 2002 committee, so I have the pleasure
of working on the forum that got me
started!
My favorite trademarks are: I love trade-
marks that are clever and a play on words,
that convey a meaning. One of our
clients...is Net2Phone and I’ve worked on
their filing programs for NET2PHONE,
CLICK2TALK, PHONE2PHONE.
If I was not in the trademark field, I would:
I can’t imagine not being in the trademark
field, but if I wasn’t, I’d probably be an
investigator, since I’ve had some experience
in investigating infringers. And I’ve always
wanted to write a murder mystery.
on THE
Move
Joseph Nelson and Jay
Ryan have joined Van
Ness Feldman in
Washington, D.C., USA.
Martin Majestic has
joined Finnegan
Henderson, Farabow,
Garrett & Dunner, LLP
in Palo Alto, California,
USA.
Debra I. Resnick has
joined Morea &
Schwartz, P.C. in New
York City, USA.
John E. Lyhus,
formerly with Brandy
International, Inc. in
Tokyo, Japan, has joined
Fitch, Even, Tabin &
Flannery in Chicago,
Illinois, USA.
The best thing about my practice is: I work
Katharina Scheja has
joined Willkie Farr &
Gallagher in Frankfurt,
Germany.
for a wonderful firm. Also, I love managing a trademark portfolio where you get to
see the full “life” of a trademark from clearance search to registration. I’m very fortunate to be in a career I enjoy so much.
Luiz Fernando Pinheiro
Guimaraes de Carvalho
has joined Montaury
Pimenta, Machado Lioce
in Rio de Janeiro, Brazil.
One thing that people don’t know about
me is: I do improvisational comedy and
song improvisation and perform from time
to time, schedule permitting, which isn’t
very often!
August 1, 2001, Vol. 56, No. 14 • INTA Bulletin
7
Reading Review
2001 Trademark
Law Handbook
The International
Trademark Association
Volume I: United States
Volume II: International
dates
TO
save
Basics
of Trademark Law
Sept 10–Sept 11,
2001
Washington, D.C. USA
Advanced TTAB
Practice Forum
Sept 13, 2001
Washington, D.C. USA
Corporate Roundtables
Sept 17--Sept 28,
2001
Multiple Locations
Trademark
Administrators
Conference
Oct 1--Oct 3, 2001
Chicago, Illinois, USA
Trademarks in
Cyberspace 2001
Oct 4–Oct 5, 2001
Chicago, Illinois, USA
For more information
log on to the INTA
web site at
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8
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Lanning G. Bryer &
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T HIS EXCELLENT REFERENCE
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• Volume I: United States
covers the United States and
provides analyses of TTAB decisions, highlights of relevant
changes in practice and proce-
INTA BULLETIN EDITORIAL BOARD
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Court defenses and remedies.
• Volume II: International
covers international developments in selected cases, and
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by local practitioners in over
80 jurisdictions.
Volume I: $89.95, 384 pages
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Combined Set: $149.95
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ISBN: 0-939190-45-1
To place an order, log on to
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Cooley Godward LLP, San Francisco
[email protected]
Thomas Drescher
Executive Editor, Law & Practice:
The Americas
Squire Sanders & Dempsey
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INTA Bulletin • August 1, 2001, Vol. 56, No. 14
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Although every effort has been made to verify
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© 2001 International Trademark Association